Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Objections
Claim 2 is objected to because of the following informalities:
In claim 2, lines 6-7, “a foreign body” should be changed to –the foreign body—as it was previously recited in claim 1, line 11.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-6 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 is defining the invention, a seal for a bearing, based on torque and muddy-water durability values of the seal. However, the written description provides no guidance as to the types of seal arrangements that would be included or excluded based on these values. In other words, the claim and the corresponding disclosure is claiming a new and novel seal based on calculated values but yet the specifics of this seal in terms of the physical structure have not been explicitly set forth in the claim and thus it is unclear what Applicant has actually invented and was in possession of at the time of filing.
The claims cover a genus that can include any seal arrangement with at least one seal lip with the final seal structure having the values specified in the claim however the specification provides no guidance as to what other seals would be included or excluded in this genus.
Ultimately the recitation of claim 1 can cover any number of different seal configurations, including ones with multiple contact lips, a singular lip or combination of lip and labyrinth seals that can result or include in the final properties of the overall seal that the claim is reciting and is ultimately covering a genus while, at best Applicant can only be shown to have had possession of a singular lip configuration. The claims therefore cover all possible permutations and there is no evidence in the record as to what specific seal combinations Applicant considered or was in possession of at the time of filing other than the sole species illustrated to which the claim is actually not structurally limited to.
In other words the claim can be viewed as defining a seal based on its final properties without defining any of the particular structure that allows the seal to have these features. Without reciting the particular components that make the invention and the seal lip different and new the claim is unlimited in nature. One of ordinary skill in the art would not know from the claim terms what seal or seal configurations are actually included or excluded from the claims. In other words one of ordinary skill in the art would not have knew every possible permutation that allows for the stated property to occur. Thus the specification is not commensurate in scope with the claims. Please see Supplementary Examination Guidelines for Determining Compliance With 37 U.S.C. 112 and for Treatment of Related Issues in Patent Applications, 76 FR 7162 (Feb. 9, 2011) and MPEP 2173.05(g).
The limitation presented by the claims represents a genus because it encompasses more than one species. See MPEP § 2163(II)(A)(3)(a). The genus includes a number of different possible seal arrangements that could achieve the property. Generic claim language defining the device based on final properties rather than its structure does not satisfy the written description requirement if it fails to support the scope of the genus claimed. Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1340, 94 USPQ2d 1161, 1171 (Fed. Cir. 2010) (en banc) ("[A]n adequate written description of a claimed genus requires more than a generic statement of an invention’s boundaries."). In this case the disclosure shows a seal with a singular lip, however seals with multiple lips or combinations of lips and labyrinth passages can all be constructed to have the final properties defined by the claim and thus the claims are currently constructed using unlimited recitations thus being generic to all species both disclosed and non-disclosed, see MPEP 2173.05(g).
The breadth of the claims could include an infinite number of seal arrangements that would meet the defined values, the nature of the invention is a new and novel seal yet specifics of that seal have not been set forth in the claim and one having ordinary skill in the art would know if they are infringing upon the claimed invention. Every currently existing seal would have to undergo testing to determine the specifics and if they are infringing and every seal, even if using an otherwise unique or new, could be included by the claim recitation even though there is no evidence that Applicant was in possession of that structure. Ultimately the breadth of the claims is unduly broad covering a whole genus and the level of experimentation required to measure/test every possible permutation is undue.
Ultimately, the specification, at the time the application was filed, would not have taught one skilled in the art how to make and/or use the full scope of the claimed invention without undue experimentation. In re Wright, 999 F.2d 1557, 1562, 27 USPQ2d 1510, 1513 (Fed. Cir. 1993).
Applicant is reminded that, in an apparatus claim, the claim must distinguish the invention over the prior in terms of structure rather than function or a result of non-specific structure. The structural features of the lip itself as shown in figures 2, 3 and 10 would appear to be the structure of the lip itself that allows for the values to occur, these are the structural features that would define the invention that are currently lacking from the claims.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be
negated by the manner in which the invention was made.
Claim(s) 1-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ohmori (US 20180087575 A1).
Regarding claim 1, Ohmori discloses (in figs. 1-2) a hub seal (11) having a side lip (621) and being intended for sealing of a space between an outer ring (2) and a hub (3) of a hub bearing (1).
Ohmori does not disclose the hub seal being characterized in that a value (torque T/shaft-diameter D) resulting from division of torque T as a value of torque of the hub seal in the hub bearing, which rotates at a rotation speed in a predetermined range, by a shaft diameter D as a value of a diameter of a shaft of the hub bearing is equal to or lower than 3N, a value of a muddy-water durable sliding distance is equal to or longer than 3,000 km, and the muddy-water durable sliding distance is a distance for which the side lip slides until a foreign body oozes out to a sealing target object side.
However, upon further review of the application and corresponding search these feature are common design features when making a seal or bearing and seal combination, see citation of pertinent articles/art below, and thus it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have a value (torque T/shaft-diameter D) resulting from division of torque T as a value of torque of the hub seal in the hub bearing, which rotates at a rotation speed in a predetermined range, by a shaft diameter D as a value of a diameter of a shaft of the hub bearing is equal to or lower than 3N, a value of a muddy-water durable sliding distance is equal to or longer than 3,000 km, and the muddy-water durable sliding distance is a distance for which the side lip slides until a foreign body oozes out to a sealing target object side, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
The Koyo article discloses conditions like rotation speed, shaft diameter, different seal part functions, and preventions for foreign matter intrusion that would affect seal or bearing and seal constructions. Ishida (US 20190107154 A1) and Tabata (US 20100254647 A1) are prior arts that discusses reducing torque and minimizing the entry of foreign matters.
Regarding claim 2, Ohmori teaches the hub seal according to claim 1, characterized in that the side lip (621) has such a shape that the torque T in a case where the hub bearing (1) rotates at a rotation speed in a predetermined range becomes smaller than the torque T in a case where the hub bearing (1) rotates at a lower rotation speed than the rotation speed in the predetermined range, and a magnitude of the torque T made smaller is set based on a position to which a foreign body entering an internal portion of the hub seal (11) is moved to an outer periphery side by rotation of the hub bearing (1, as the side lip is similar to the instant application, the side lip would rotate similarly to stop the foreign body from entering the bearing, as the claim is not setting forth any particular structure the seal of Ohmori would anticipate this limitation).
Regarding claim 3, Ohmori teaches the hub seal according to claim 1, characterized in that the side lip (621) rotates together with one of the outer ring (2) and the hub (3), which rotates, and a surface facing an inner periphery side becomes a contact surface for the sealing.
Regarding claim 4, Ohmori teaches the hub seal according to claim 3, further comprising a sleeve (51) as an annular member, characterized in that the sleeve (51) is fixed to one of the outer ring (2) and the hub (3), which does not rotate, and the contact surface of the side lip (621) contacts the sleeve (51) for the sealing.
Regarding claim 5, Ohmori teaches the hub seal according to claim 1, characterized in that the torque of the hub seal (11) is torque which is necessary for rotating the hub seal (11) against sliding resistance of the side lip (621) based on lip reaction force as a value of reaction force of the side lip (621, this lip reaction force would exist because the side lip is similar to the instant application and there will be some sort of sliding resistance of the side lip based on lip reaction force of the side lip, again the recitation of the claim is not defining any particular structure).
Regarding claim 6, Ohmori teaches the hub seal according to claim 1, characterized in that one of the outer ring (2) and the hub (3), which rotates, has the shaft (7) of the hub bearing (1).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AIMEE T NGUYEN whose telephone number is (571)272-5250. The examiner can normally be reached M-F 10-7 EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, John Olszewski can be reached at 571-272-2706. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/AIMEE TRAN NGUYEN/Examiner, Art Unit 3617
/JAMES PILKINGTON/Primary Examiner, Art Unit 3617
Prosecution Insights